(KARUHANGA, TABARO & ASSOCIATES)

Technology. Media.Telecommunications.

Construction Law.Arbitration. Intellectual Property.

REGISTRATION

A trademark is basically a sign that is used todistinguish the goods and services offered by

one undertaking from those of another.

THE TWO MAIN CHARACTERISTICS OF A TRADEMARK;

I. It must be distinctive (it must by its very nature be able to distinguish goodsand services) andII. It should not be deceptive (misleading).

Therefore a trademark is a sign that individualizes the goods and services of a givenenterprise and distinguishes them from the goods and services of its competitors. Atrademark may consist of any word, symbol, design, slogan, logo, sound, smell,colour, label, name, signature, letter, numeral or any combination of them andshould be capable of being represented graphically. A trademark can also be athree dimensional-consisting of packaging of goods itself. A trademark protectsgood whereas a service mark protects services.

The registration is for a period of Seven years (7) and upon expiryis renewed every ten (10) years.

STEPS FOR REGISTRATING A TRADEMARK IN UGANDA?1. Request for Search: A person who intends to apply for the registration of atrademark shall carry out a search to ascertain whether the trademark exists in theregister upon payment of a prescribed fee.

2. Filing of Application by Applicant: A trademark application is then filed uponpayment of application fees. The application should contain the mark proposed tobe used, the goods or services, the name, address and the signature of applicant.Note: If the applicant is a foreign company; A Power of Attorney or Form ofAuthorization (TM NO. 1) to an agent (Advocate of High Court) will be required.

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3. The application is then examined to determine if it is capable of distinguishing thegoods or services from others and whether use of the trademark is likely to causeconfusion.

4. Publication of Application: If accepted, the application will be advertised in theOfficial Government Gazette for 60 days.

5. Certificate of Registration: If there is no opposition after the expiration of 60 days of the advertisement in the gazette, the Registrar shall upon payment of theprescribed fee by the applicant enter the trademark in the register and issue acertificate of Registration.

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PROSECUTION OFTRADEMARK IN UGANDA

KTA FEES STRUCTURENote Gazzete fees are a standard rate ofUSD 124 or UGX 450,000

NO ITEM PROFESSIONALFEES

STATUTORYFEES

DISBURSMENTS

Search at the Trademark Registry

Application for Registration

Notice of Opposition

Counter Statement / Defence

Registration of a Trademark

Certification of a Trademark

Assignment (Within 6 Months)

Assignment (Within 12 Months)

65

150

150

250

250

250

100 1000

1000

40

60

60

60

60

60

60

75

450

60 100

100

100

400

400

1

2

3

4

5

6

7

8

REGISTRATION OF A COPYRIGHTOverviewSection 4 Copyright And Neighboring Rights Act provides that the author of anywork specified in Section 5 shall have a right of protection of the work, where workis original and is reduced to material form in whatever method irrespective ofquality of the work or the purpose for which it is created and that this protectionshall not be subject to any formality.

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TRADEMARK

NO ITEM PROFESSIONALFEES

STATUTORYFEES

DISBURSMENTS

Assignment (After 12 Months)

Changes in Particulars

Renewal

Association Fees

Rectification of Trademark

Statutory Declarations

Representation in Court

Appearance at The Registrar’s Office toargue or defend a Trademark opposition.

300

30

250

250

.

100 1000

500

50

60

60

.

50

250

60 600

100

200

.

5000

ChargedAccordingto CourtFees Rules

ChargedAccordingto theAdvocatesAct

NA

16

15

14

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10

9

NO

However for purposes of keeping evidence of the right of ownership, identificationof works and authors & maintenance of record of right, the owner of a copyrightcan apply to the Registrar of Copyrights for its registration per Regulation 3 ofCopyrights and Neighboring Rights Regulations 2010. Specifically to this inquiry,Section 5(1) (e) of the Act, provides for computer programmes and electronic dataand banks other accompanying material as one of the items that are eligible forcopyright protection.

Procedure• Apply to the Registrar of Copyrights on Form 1 in 2nd Schedule to the Copyrights and Neighboring Rights Regulations 2010. (A copy is attached)

• Accompany application with; - Copies/records of representing the work whether the work has been published before or not. - A non-refundable fee of UGX 50,000/= (fifty thousand shillings) specified in 3rd schedule to the Regulations.

• Upon receiving the application, the Registrar will issue a notice to gazette thesame for 60 days. - Applicant pays the fees for publication of the notice amounting to UGX 450,000.

• If no objection is lodged after 60 days from date of publication of notice of application to register the copyright, Registrar enters the name of the Applicant in the register as the owner/ author of the copyright.

• Applicant is then issued with a Certificate of Registration as proof of registration.

Note:Section 81 of Copyright & Neighboring Rights Act, provides that a Copyright orneighboring rights owner who is not a citizen or resident of Uganda shall beprotected under this Act if the work was not published in a country which;

(i) - Is a member of the organisations specified in Part 1 of the Second Schedule(ii) - Signatory to any of the international conventions specified in Part II of theSecond Schedule.

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Part I / Second Schedule• World Intellectual Property Organisation (WIPO)• Africa Regional Intellectual Property Organisation (ARIPO)• The United Nation Educational Scientific And Cultural Organisation (UNESCO)• The Wolrd Trade Organisation

Part II / Second Schedule• The Trade Related Aspects Of Intellectual Property Rights Agreement. (TRIPS)

PATENT PROTECTION IN UGANDA.Patent protection is granted when three elements are existent in a given invention.These are;• Novelty (new)• Inventive step(Obviousness)• Industrial Application (if it can be used in any industry).

Thus in the case at hand, the software that has been developed if it fits within thecriteria set for patent, then patent protection can be granted. The informationgiven cannot enable us to conclusively advise on which protection to apply for.In case, a patent application is to be submitted to the registry, we shall need;

a) Application ( specific form)b) Description of the inventionc) Claimd) Drawingse) Abstractf) Power of Attorneyg) Industrial applicability of the invention.

Statutory Fees.Application fees USD 100Grant of Certificate USD 100Professional fees USD 250These fees are in case the application doesn’t have any oppositions and counteroppositions.

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UTILITY MODELS

In cases where the requirements of a patent are high, the applicant may applyfor/convert application for a utility model.In applying for a utility model, one must prove;

• That the invention is new• Industrially applicable.The application for utility model takes the same procedure as a patent and therequirements are the same.

Statutory Fees.Application fees USD 50Grant of Certificate USD 50Professional fees USD 250

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Technology. Media. Telecommunications. Construction Law.Arbitration. Intellectual Property

(KARUHANGA, TABARO & ASSOCIATES)

URBRA HouseFloor 2, Wing A, Plot 1Clement Hill RoadP.O. Box 37366 Kampala, UgandaTel: 0414 530 114Fax: 0414 531 078Email: partners@ktaadvocates.com